Re Design No 29076, Class 14, Registered by Wolanski [1953] HCA 72

Such is the function to be performed by the article for which the design is intended, but, for the purpose of deciding the case, I am not concerned with any question of function: Hecla Foundry Co. v. Walker, Hunter & Co. [1] . It is necessary to keep steadily in mind that that which is the subject of the impugned registration and is said to have been published before the date of registration is nothing but a design, applicable, as the definition in s. 4 says, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article. It is not an article made according to a particular shape or pattern. Much less is it a method of making such an article, or a method of achieving an end by the use of such an article. It is a conception or suggestion as to shape, configuration, pattern or ornament: Pugh v. Riley Cycle Co. Ltd. [1] ; and accordingly what the proprietor of a design gets by its registration is a monopoly for one thing only, and that is "one particular individual and specific appearance": Russell-Clarke on Copyright in Industrial Designs (1930), p. 17; Kestos Ltd. v. Kempat Ltd. [1] . In the present instance, the design is not one which is applicable to ornamentation or pattern; it is an idea of shape, or configuration, two words between which there is no need to draw a distinction [1] .

1. (1889) 14 App. Cas. 550. 2. (1912) 1 Ch. 613, at p. 619. 3. (1935) 53 R.P.C. 139, at p. 151. 4. (1935) 53 R.P.C., at p. 152.

The question I have to consider is a much narrower one than that which arises when the validity of a registration under the Act is attacked on the ground that the design was not new and original at the date of its registration. Where that ground is raised and is supported by proof of a prior publication, the issue is whether there is such a difference, between the conception of shape previously published and the registered design, as satisfies the requirement of novelty and originality in the latter. That issue may be raised in the Supreme Court of a State, either in proceedings under s. 39 or by way of defence to an action for infringement (Macrae Knitting Mills Ltd. v. Lowes Ltd. [2] ). But on an application to this Court to exercise the jurisdiction given to it by s. 28, the applicant must establish, as the section plainly shows, a prior publication of the registered design itself. He cannot rely upon publication of a different design, even though it be sufficiently similar to justify a finding of lack of novelty and originality in the registered design: Re Radnall's Registered Design [3] . The issue before me, therefore, is whether the identical conception of shape which is expressed in the drawings now contained in the respondent's certificate of registration was disclosed to the public before the application for registration was made. That is not to say that the applicant, in order to succeed, must prove a prior publication of some physical representation conforming in every minutest detail to the drawings in the certificate. Physical representations of a shape, whether in the form of manufactured articles of that shape or in the form of depictions of articles of that shape, are a means by which the idea of the shape may be communicated; but the question to be considered upon a comparison of two such representations in such a case as the present is, not whether there is identity between the representations themselves, but whether there is identity between the ideas of shape which they respectively convey. "You might find many differences", said Lord Herschell in Samuel Heath & Sons Ltd. v. Rollason [4] , "and yet come to the conclusion that the designs were the same. You might find but few differences and yet come to the conclusion that the designs were different." The question, as has often been said, is essentially one upon which the eye must be the judge (Hecla Foundry Co. v. Walker, Hunter & Co. [1] ).

1. (1936) 55 C.L.R. 725. 2. (1934) 51 R.P.C. 164. 3. (1898) A.C. 499, at p. 503. 4. (1889) 14 App. Cas., at p. 555.

In the present case, prior publication of the respondent's design is said by the applicant to have occurred in two ways; first, by the filing at the Patent Office, Canberra, on 8th November 1947, and the availability there for public inspection on and after 5th February 1951, of a French Patent Specification No. 956415 in the name of Dominique Berducone; and, secondly, by the public use in Sydney and other places in Australia from July 1950, by M. Michel Calluaud, of a tie purchased by him in France.

The French patent specification relates to a tie-support of a kind different from that to which the respondent's design is applicable. This support is intended, not to be covered with material so as to give the appearance of a knot, but to take the place of a knot, and to have suspended from its lower edge a strip of material formed to resemble that portion of a normal tie which hangs below the knot. The specification contains several drawings, but the applicant relies only upon figs. 13 and 14 and certain letterpress relating to those figures. When I take in one hand this French specification and examine figs. 13 and 14, and take in the other hand the respondent's representation of his design and examine it, I must ask myself whether I am looking at two representations of one and the same shape or at representations of two different shapes. The answer I give unhesitatingly to that question is that I am looking at representations of two different shapes. Of course, they have points of resemblance, and yet I find it impossible to suppose that anyone who considered his idea of a shape to be expressed in the respondent's drawings would be prepared to accept the drawings in the French specification as being another reflection of the same idea.

It is no doubt true, as, in Leatheries Ltd. v. Lycett Saddle & Motor Accessories Co. Ltd. [1] , Eve J. rejoiced to find himself able to say on the authority of Lord Herschell, that when the judge has arrived at a conclusion upon such an issue of fact, it is not to be expected that he will be able, at any rate satisfactorily to the litigants or to one of the litigants, to indicate in detail the grounds which have led him to the conclusion. And I cannot say that the present case is any exception to the rule that the eye, like the heart according to Pascal, has its reasons that reason does not know. But at least I may say in general terms that the French drawings appear to me to suggest a much more clean-cut, sharply-delineated, angular shape than the respondent's drawings. The latter present a shape of a more roundly-moulded kind, depending more upon curves than straight lines. Perhaps it is as well to mention some specific points. The top and bottom lines in the French drawing (fig. 13) are shown as perfectly straight, while the top line of the respondent's representation is generously curved and swept up to corners resembling high rounded ears, and its bottom line seems to be curved also. Looking at fig. 14 (the side elevation) in the French specification, one sees a front face formed by two straight lines of equal length, so set in relation to one another that, if produced, they would form an obtuse angle, and joined by a small arc of wide radius; and on the back there is a clip which, once it has turned downwards after leaving the top edge, proceeds down and away from the body of the article in a straight line. By contrast, the respondent's drawings suggest that in side elevation an article made according to his design would have either a straight or a regularly curving face, and at the back a curving clip or hook.

These are some of the more important matters which would have to be included in an inventory of the points of difference between the two designs. Together with other points they have been insisted upon by an expert called by the respondent, whose views have been subject to comments and criticisms by an expert called by the applicant. Both experts have done their best to help me by pointing out in detail the features which tend towards or against identity in the two conceptions of shape which the French and Australian draftsmen have respectively endeavoured to capture and set forth on paper; but when they have drawn my attention to everything they have noticed in the course of an exact scrutiny of the data before them, my task remains what it was in the beginning. It is not to weigh the points of difference against the points of resemblance, nor does it necessitate identification of all the features which in each set of drawings contribute significantly to the general effect. It is simply to see whether the conception of shape communicated by figs. 13 and 14 of the French specification is the same as that which is expressed in the respondent's drawings; and, as I have said already, I find that it is not. I therefore hold that exposure of the French specification to public inspection did not amount to publication of the respondent's design.

I turn to the tie purchased by M. Calluaud in France and brought by him to Australia. M. Calluaud has given evidence, by affidavit and orally, that he bought several ties of the hook-on variety in Paris, and brought them with him when he came to Australia in July 1950. He was uncertain how many he had, but he said that he gave two of them to Mr. Rennix, a director of the applicant company, in April 1953, and these he had worn several times in the period from July 1950 to April 1953. The respondent's application for registration of his design was lodged on 16th May 1951, and if M. Calluaud's evidence is accurate he wore the ties in question in public in Australia before that date. I must say that I am not satisfied that he did. I was not sufficiently impressed by his accuracy of recollection or his carefulness in statement to be able to regard his uncorroborated evidence as a sufficient foundation upon which to rest a finding invalidating the registration of the respondent's design.

But even if I were to accept M. Calluaud's evidence completely, I should not regard it as establishing publication of the respondent's design before 16th May 1951. And that for two reasons. In the first place, the tie which is in evidence as an example of those he brought from France is built upon a support of the kind to which the respondent's design is intended to be applied; but of course the support is encased in material, and when the tie is being worn the beholder sees nothing to indicate the shape of the support or even (unless he is an expert in ties, or at least an acute observer) that the tie is of the hook-on variety at all. A substantial portion of the covered support is hidden by the collar, so that the illusion of an ordinarily-tied necktie is created. It is therefore impossible to find, from the mere fact that such a tie was worn in public, that the shape of the support was published. And there is not a word of evidence to prove that anyone but M. Calluaud himself ever saw, or had an opportunity of seeing, any of his ties before May 1951, except when they were being worn by him. For all that appears, he may have kept them safely locked away when not in use. Mr. Thomas sought to meet this difficulty by contending that there was publication of the design of the support to M. Calluaud himself. On his evidence, there was publication of that design to him in France, but in Australia, where he seems to have kept such knowledge as he may have had of it in the recesses of his own mind, I should hardly think it could be said that there was a new publication by him to himself whenever he gazed anew upon one of his ties.

And, in the second place, I do not find that the shape of the support in M. Calluaud's tie is the same shape as that which is depicted in the respondent's drawings. The former is to be distinguished from the latter at a glance, perhaps mainly because of the relative slightness of the curve in the top line of the French support when viewed from the front, the lesser extent to which the top corners are swept back, the bend of the clip, the relative narrowness of the lower opening of the socket, and the different effect produced, upon the line running from the top corners of the article to the top of the wings, by the different manner in which the wings are bent back. The two shapes are, of course, not altogether unalike. It is inevitable that they should have a resemblance, because the article to which they are applied is of a kind in which there is only limited scope for differences of shape. But still, the two shapes are simply not the same. It would not be true to say that by showing a person the support in M. Calluaud's tie you would reveal to him the idea of shape which is expressed in the respondent's drawings. So Mr. Rennix himself evidently considered; for when he set himself to produce a tie-support, having before him one of M. Calluaud's French ties and one of the respondent's supports made according to its registered design, he did not act as if there was nothing to choose between the two supports so far as shape was concerned. He treated the differences between the two shapes as important enough to call for a choice. He deliberately put aside the French model. He did not adopt some intermediate shape. As he frankly admitted, he chose the shape of the respondent's design, and copied it precisely.

For these reasons, I am of opinion that the application to cancel the registration of the respondent's design on the ground of prior publication thereof should be refused. The motion will accordingly be dismissed with costs.